Vision Films Inc. v. Does 1-24

Filing 9

MEMORANDUM AND ORDER granting 5 MOTION for Discovery prior to Rule 26(f) Conference. Signed by Judge Sherry R. Fallon on 3/20/2013. (lih)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

VISION FILMS, INC.,
Plaintiff,
v.

JOHN DOES 1-24,
Defendants.

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Civil Action No. 12-1746-LPS-SRF

MEMORANDUM ORDER
I.

INTRODUCTION

Presently before the court in this copyright infringement action is plaintiff Vision Films,
Inc.'s ("Vision Films") ex parte Motion for Leave to Conduct Expedited Discovery (the
"Motion") (D.I. 5). Vision Films seeks to serve 1 third-party subpoenas on internet service
providers ("ISPs") in order obtain the names and addresses of defendants John Does 1-24, which
are associated with identified Internet Protocol ("IP") addresses that allegedly were used to
illegally copy and distribute Vision Films' copyrighted motion picture. (D.I. 6 at 1, 9)
For the reasons which follow, the court GRANTS Vision Films' Motion to conduct
expedited discovery with respect to the IP addresses identified in Exhibit A to the Complaint
(D.I. 1), subject to the protective order outlined in Section V below.
II.

BACKGROUND

Vision Films is a filmmaker and motion picture copyright-holder that is responsible for
the production of the commercially released motion picture titled Blood Money (the "Motion

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Vision Films' Motion seeks "leave to conduct expedited discovery" (D.I. 5), but does not
specifically propose the form of such discovery. Based upon the court's analysis of decisions
related to the subject matter of the pending request, the court assumes that Vision Films
anticipates issuing third party subpoenas directed to ISPs requesting information identifying the
twenty four John Doe defendants.
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Picture"). (D.I. 1 at 4) Vision Films asserts the following facts in its Complaint and Opening
Brief in Support of the Motion (D.I. 6). The court accepts the averments as true for purposes of
this motion, without making any findings of fact.
When a motion picture is transformed into an unsecured digital format, it can be copied
and distributed an unlimited number of times over the internet. (D.I. 6 at 3; D.I. 7 ~ 4) To do this,
many individuals use online media distribution systems called "peer-to-peer" ("P2P") networks.
(!d.; D.I. 7 ~ 5) These P2P systems allow each user who copies a digital file from another user to

distribute the file to other users. (!d.; D.I. 7

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6) Vision Films alleges that infringement occurs

when an initial file-provider elects to share a file using a P2P network. (!d. at 3-4; D.I. 7
This action of sharing is known as "seeding." (!d.; D.I. 7

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7)

7) Other users ("peers") on the

network connect to the seed file to download. (!d. at 4; D.I. 7 ~ 7)
Vision Films engaged Crystal Bay Cooperation ("Crystal Bay") to identify direct
infringers of its copyrighted Motion Picture. (D.I. 6 at 3) Using specially designed computer
software, Crystal Bay determined that a number of individuals were copying and sharing the
Motion Picture using an online media distribution system called BitTorrent. (!d. at 4; D.I. 7 ~ 8)
BitTorrent is computer program that allows peers to join together in a P2P network to
upload (distribute) and/or download (copy) files stored on other users' computers. (Jd. at 3-4;
D.I. 7

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6) BitTorrent employs a protocol to initiate simultaneous connections to hundreds of

other users possessing and sharing copies of a file. (!d. at 4; D.I. 7

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10) As additional users

request the same file, each new peer becomes part of the network from where the file can be
downloaded. (!d.; D.I. 7 ~ 8) Users download the file in pieces. (!d.; D.I. 7 ~ 11) After each piece
of the file is downloaded successfully, it is immediately available to others seeking the file. (!d.;
D.I. 7 ~ 11) This group of interacting peers is referred to as a "swarm." (Id.; D.I. 7 ~ 14)

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Individuals who participate in a swarm expose the IP address they are using when
downloading or sharing a file. (Jd. at 5-6; D.I. 7 ~ 12, 21) Each of the individual Doe defendants
in this action, identified by their IP addresses in Exhibit A to the Complaint, are allegedly peers
who participated in the same swarm to reproduce and distribute the Motion Picture. (!d. at 4-5;
D.I. 7 ~ 15) Crystal Bay used publicly available databases to trace the identified IP addresses to
general geographic areas purportedly within Delaware? (Jd. at 6; D.I. 7 ~ 19, 23; D.I. 1, Ex. A)
Shortly after initiating this action against John Does 1-24, identifying them by their IP
addresses, Vision Films filed the pending ex parte Motion for expedited discovery seeking access
to the names and addresses of the individuals associated with the IP addresses, as found in the
ISPs' billing records. (D.I. 6 at 7) Vision Films asserts that ISPs routinely delete the data
associated with IP addresses, and therefore, the defendants' identifying information could be lost
forever if the Motion is not granted. (!d. at 10)

III.

LEGAL STANDARD
Generally, "[a] party may not seek discovery from any source before the parties have

conferred as required by Rule 26(f)." 3 Fed. R. Civ. P. 26(d)(l). Courts, however, have broad
discretion to manage the discovery process, and can expedite or otherwise alter the timing and
sequence of discovery. See id. "Federal courts are also specifically authorized, if circumstances

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"In situations where a plaintiff files suit against then unnamed defendants . . . courts have
accepted IP addresses as establishing a prima facie case of personal jurisdiction." Malibu Media,
LLC v. John Does 1-15,2012 WL 3089383, at *10 (E.D. Pa. July 30, 2012) (citations omitted).
Vision Films' factual assertion as to the location of the defendants at the time of the alleged
infringement establishes personal jurisdiction for purposes of the pending Motion. Should the
ISPs or any John Doe defendants make a showing contrary to this assertion, the court will
reexamine the issue of personal jurisdiction.
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Rule 26(f) of the Federal Rules of Civil Procedure provides that "the parties must confer as
soon as practicable-and in any event at least 21 days before a scheduling conference is to be
held or a scheduling order is due under Rule 16(b)." Fed. R. Civ. P. 26(f)(l). Parties need not
await the scheduling of a Rule 16 conference before holding a Rule 26(f) conference.
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warrant, to shorten the time for responses to interrogatories and requests for production of
documents, and to permit early depositions." Kone Corp. v. Thyssenkrupp USA, Inc., 2011 WL
4478477, at *3 (D. Del. Sept. 26, 2011) (citing Fed. R. Civ. P. 30(a)(2)(A)(iii); 33(b)(2); &
34(b)(2)(A)).
Unlike other discovery provisions, the Federal Rules of Civil Procedure do not set forth a
standard under which courts should consider expedited discovery motions. Similarly, "[t]he
Third Circuit does not appear to have adopted a standard for evaluating such requests." Kone

Corp., 2011 WL 4478477, at *3. Nevertheless, there are two prevalent standards district courts in
this Circuit have applied in deciding motions for expedited discovery.
The first standard, articulated initially by the U.S. District Court for the Southern District
of New York in Notaro v. Koch, 95 F.R.D. 403 (S.D.N.Y. 1982), "analyzes the expedited
discovery request using factors similar to those used for injunctive relief or specific
performance."4 BAE Sys. Aircraft Controls, Inc. v. Eclipse Aviation Corp., 224 F.R.D. 581, 587
(D. Del. 2004) (citing Notaro, 95 F.R.D. at 405). See also Kone Corp., 2011 WL 4478477, at *3.
The second, less demanding standard requires the party seeking discovery to show good
cause for its motion, such that the request is "reasonable in light of all the circumstances." BAE

Sys. Aircraft Controls, 224 F.R.D. at 587. See also Kone Corp., 2011 WL 4478477, at *3 (citing
Better Packages, Inc. v. Zheng, 2006 WL 1373055, at *3 (D.N.J. May 17, 2006)).
Under this "reasonableness" standard, the court must weigh the need for
discovery at an early juncture in the litigation against the breadth of the discovery
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Under the Notaro standard, the moving party must demonstrate:
(1) irreparable injury, (2) some probability of success on the merits, (3) some
connection between the expedited discovery and the avoidance of the irreparable
injury, and (4) some evidence that the injury that will result without expedited
discovery looms greater than the injury that the defendant will suffer if the
expedited relief is granted.
Notaro, 95 F.R.D. at 405.
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requests and the prejudice to the responding party, by considering such factors as
(1) the timing and context of the discovery requests[] ... ; (2) the scope and
purpose of the requests; and (3) the nature of the burden to the respondent.

Kone Corp., 2011 WL 4478477, at *4.
In prior decisions involving motions for expedited discovery, this court has utilized only
the reasonableness standard. In Commissariat A L 'Energie Atomique v. Dell Computer Corp.,

2004 WL 406351 (D. Del. Mar. 3, 2004), the court granted the plaintiffs motion for expedited
discovery because the plaintiff "show[ ed] good cause exist[ ed] to allow the discovery," and the
discovery sought was "appropriately tailored to the issues raised" in the pending motion. !d. at

*3 (citing Philadelphia Newspapers v. Gannett Satellite Info. Network, Inc., 1998 WL 404820, at
*2 (E.D. Pa. July 15, 1998)). More recently, in Kone Corp., this court discussed the competing
standards applicable to motions for expedited discovery, and recognized that '" [a]n increasing
majority of district courts' have rejected the rigid Notaro standard and adopted the more flexible
'good cause' /reasonableness analysis when considering expedited discovery requests." Kone

Corp., 2011 WL 4478477, at *4 (quoting St. Louis Grp., Inc. v. Metals & Additives Corp., 275
F.R.D. 236 (S.D. Tex. 2011)). The court was "convinced that it should follow the lead of [Dell

Computer Corp.] and the majority of other jurisdictions," and therefore, the court applied the
reasonableness standard to the plaintiff's motion for expedited discovery. Kone Corp., 2011 WL

4478477, at *4.
The court follows the analysis in Kone Corp. and applies the reasonableness standard to
Vision Films' Motion.

IV.

DISCUSSION
The reasonableness standard requires the court to consider "'the actual circumstances of

this case, as well as ... certain factors such as ... the need for discovery, and the breadth of the
moving party's discovery requests."' Kane Corp., 2011 WL 4478477, at *6 (quoting BAE Sys.

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Aircraft Controls, 224 F.R.D. at 587). The present circumstances favor expedited discovery and
satisfy the reasonableness standard. Good cause exists for Vision Films to conduct expedited
discovery. In granting Vision Films' Motion, the court finds instructive the reasoning set forth in

Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239 (S.D.N.Y. 2012), a case involving facts
substantially similar to the present matter.
In Digital Sin, the plaintiff filed a motion for expedited discovery seeking to subpoena
various ISPs in order to identify the individuals associated with IP addresses that allegedly were
used to illegally share the plaintiffs copyrighted motion picture. The court found that, under the
circumstances, good cause existed for the plaintiff to engage in expedited discovery.
Here, Plaintiff has alleged a prima facie case of infringement sufficient for
purposes of this motion and appears to have no other way of obtaining the
identities of the alleged infringers. . . . [I]n all of the opinions and rulings in
similar cases around the country, 5 the Court has found no indication that the
plaintiffs have any reasonable alternative ... [other than] subpoenas to obtain the
identities of the alleged infringers. Thus, without granting Plaintiffs request, the
defendants cannot be identified or served and the litigation cannot proceed.
Additionally, expedited discovery is necessary to prevent the requested data from
being lost forever as part of routine deletions by the ISPs.

Digital Sin, 279 F.R.D. at 241-42.
In the present case, Vision Films asserts a prima facie claim of copyright infringement for
purposes of the pending Motion. 6 Vision Films, like the Digital Sin plaintiff, has no other way to
5

See Digital Sin, 279 F.R.D. at 240 n.2.

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"To establish [copyright] infringement, two elements must be proven: (1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are original." Feist Pub! 'ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (citing Harper & Row Publishers, Inc. v.
Nation Enters., 471 U.S. 539, 548 (1985)). Here, Vision Films satisfies both elements. First,
Vision Films attached to the Complaint a Certificate .of Registration evidencing that a valid
copyright exists for the Motion Picture. (D.I. 1, Ex. B) In addition, Vision Films asserts that the
defendants, through the use of BitTorrent, illegally downloaded and shared the Motion Picture.
(D.I. 6 at 1, 9) Therefore, the court finds that Vision Films has adequately set forth a prima facie
claim of copyright infringement. See Malibu Media, LLC v. John Does 1-15, 2012 WL 3089383,
at *7.
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identify the alleged infringers, apart from serving subpoenas on the ISPs. Accordingly, without
granting the pending Motion, Vision Films can neither identify nor serve the defendants, and this
action cannot proceed. Additionally, Vision Films asserts, similar to the plaintiff in Digital Sin,
that expedited discovery is necessary because evidence identifying the defendants may be
destroyed as a result of routine deletion by ISPs. (D.I. 6 at 10) Therefore, the present
circumstances favor expedited discovery.
The court, however, finds that the scope of Vision Films' proposed order for expedited
discovery does not adequately address the potential for false identification of an alleged
infringer. For example, Vision Films seeks the Doe defendants' "true identities," including their
"true names and capacities," "subscriber information," "contact information" and "addresses."
(D.I. 6 at 7, 9, 10) Therefore, the court will issue a protective order to preserve confidentiality
and allow the Doe defendants and ISPs to be heard in this matter before the identifying
information is disclosed to Vision Films. 7
There is nothing in the record to suggest that Vision Films has ulterior motives in seeking
the Doe defendants' identities. However, the court notes that a number of district courts have
expressed concerns about misidentification of defendants and misuse of information in similar
expedited discovery matters. With respect to misidentification, there is a possibility that the
names and addresses produced will not match the individuals who actually downloaded the
Motion Picture. This can occur where the true infringer uses someone else's computer or
wireless network to access the copyrighted material. See, e.g., Malibu Media, LLC v. Does 1-5,

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"District courts may for good cause issue a protective order to spare parties 'annoyance,
embarrassment, oppression, or undue burden."' Digital Sin, 279 F.R.D. at 242 (quoting Fed. R.
Civ. P. 26(c)(l)).

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2012 WL 2001968, at *1 (S.D.N.Y. June 1, 2012) ("The fact that a copyrighted work was
illegally downloaded from a certain IP address does not necessarily mean that the owner of that
IP address [is] the infringer." (citation omitted)); Digital Sin, 279 F.R.D. at 242 (discussing the
risk of false positives).
With respect to misuse of information, some courts have noted that plaintiffs appear
simply to be "using the federal courts as an avenue to collect money." Malibu Media, LLC v.
Does I through 13, 2012 WL 4956167, at *2 n.2 (E.D. Cal. Oct. 12, 2012). See, e.g., AF
Holdings LLC v. Doe, 2012 WL 6608993, at *1 (E.D. Cal. Dec. 17, 2012); Malibu Media, LLC
v. Does 1-5, 2012 WL 2001968, at *2; Hard Drive Prods. v. Does 1-90, 2012 WL 1094653, at

*7 (N.D. Cal. Mar. 30, 2012) (explaining that "the court will not assist a plaintiff who seems to
have no desire to actually litigate but instead seems to be using the courts to pursue an
extrajudicial business plan against possible infringers"); Digital Sin, 279 F.R.D. at 242
(discussing coerced, unjust settlements). The court finds it prudent to incorporate some
protections, for a limited duration, to avoid unintended consequences of the disclosure of
confidential information as to the John Doe defendants. Consequently, the court has outlined the
scope of the permissible expedited discovery in Section V.
V.

CONCLUSION

The Order is adapted from one issued by United States District Judge Nathan in Digital
Sin.

IT IS HEREBY ORDERED that Vision Films may immediately serve a Rule 45
subpoena on the ISPs listed in Exhibit A to the Complaint to obtain information to identify Does
1-24, specifically, his or her name and address. The subpoena shall have a copy of this Order
attached.

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IT IS FURTHER ORDERED that the ISPs will have 60 days from the date of service of
the Rule 45 subpoena upon them to serve Does 1-24 with a copy of the subpoena and a copy of
this Order. The ISPs may serve Does 1-24 using any reasonable means, including written notice
sent to his or her last known address, transmitted either by first-class mail or via overnight
service.
IT IS FURTHER ORDERED that Does 1-24 shall have 60 days from the date of service
of the Rule 45 subpoena and this Order upon him or her to file any motions with this court
contesting the subpoena (including a motion to quash or modify the subpoena). The ISPs may
not turn over the Doe defendants' identifying information to Vision Films before the expiration
of this 60-day period. Additionally, if a defendant or ISP files a motion to quash the subpoena,
the ISPs may not turn over any information to Vision Films until the issues have been addressed
and the court issues an order instructing the ISPs to resume production of the requested
discovery.
IT IS FURTHER ORDERED that if the 60-day period lapses without a Doe defendant or
ISP contesting the subpoena, the ISPs shall have 10 days to produce the information responsive
to the subpoena to Vision Films. A Doe defendant or ISP who moves to quash or modify the
subpoena, shall at the same time as his or her filing also notify all ISPs so that the ISPs are on
notice not to release any of the Doe defendants' contact information to Vision Films until the
court rules on any such motions.
IT IS FURTHER ORDERED that the subpoenaed entity shall preserve any subpoenaed
information pending the resolution of any timely-filed motion to quash.
IT IS FURTHER ORDERED that an ISP that receives a subpoena pursuant to this Order
shall confer with Vision Films and shall not assess any charge in advance of providing the

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information requested in the subpoena. An ISP that receives a subpoena and elects to charge for
the costs of production shall provide a billing summary and cost report to Vision Films.
IT IS FURTHER ORDERED that Vision Films shall serve a copy of this Order along
with any subpoenas issued pursuant to this Order to the listed ISPs.
IT IS FURTHER ORDERED that any information ultimately disclosed to Vision Films
in response to a Rule 45 subpoena may be used by Vision Films solely for the purpose of
protecting its rights as set forth in the Complaint.

Dated: March 20, 2013

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